11230208 (B.P.A.I. Mar. 24, 2011)

Ex Parte Rooney

Board of Patent Appeals and InterferencesMar 24, 2011

11230208 (B.P.A.I. Mar. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/230,208 09/19/2005 Russell Rooney 5020.01US02 3249 62274 7590 03/24/2011 DARDI & HERBERT, PLLC Moore Lake Plaza, Suite 205 1250 East Moore Lake Drive Fridley, MN 55432 EXAMINER CEGIELNIK, URSZULA M ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 03/24/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RUSSELL ROONEY ____________ Appeal 2009-009821 Application 11/230,208 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEVEN D.A. MCCARTHY and STEFAN STAICOVICI, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009821 Application 11/230,208 2 The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 1 final decision rejecting claims 11, 13-17 and 19-22.2 More specifically, the 2 Examiner rejects: 3 claims 11, 13, 14, 16, 19, 21 and 22 under 35 U.S.C. 4 § 103(a) as being unpatentable over Bell (US 2,117,133, issued 5 May 10, 1938) and Gallagher (US 4,221,075, issued Sep. 9, 6 1980); 7 claims 15 and 20 under § 103(a) as being unpatentable 8 over Bell, Gallagher and Kolintzas (US 2,841,922, issued July 9 8, 1958); and 10 claim 17 under § 103(a) as being unpatentable over Bell, 11 Gallagher and Jenkins (US 190,438, issued May 8, 1877). 12 The Examiner has withdrawn claims 1 and 3-10. Claims 2, 12 and 18 have 13 been cancelled. 14 We REVERSE. 15 The sole pending independent claim recites: 16 11. A method of making a bird call, the method 17 comprising spinning a surface having a central axis 18 perpendicular to the surface and an opening that is 19 displaced from the central axis by a distance, with 20 the spinning motion causing the opening to emit a 21 bird call as a result of air moving across the 22 opening, wherein the bird call is that of a Gavia 23 immer. 24 2 Claim 22 recites “[t]he method of claim 1.” The Examiner has withdrawn claim 1 from consideration. Even if claim 1 had not been withdrawn, it was an apparatus claim. For the purposes of this Appeal it is assumed that method claim 22 is dependent from method claim 11. Appeal 2009-009821 Application 11/230,208 3 (Italics in original). This opinion will refer to the species Gavia immer by its 1 common name, the common loon. 2 Bell describes a sound producing toy that simulates the sound of an 3 owl. (Bell, col. 1, ll. 1-8). The toy includes a sound box 1. The sound box 1 4 has an annular wall 2 and side walls 3, wherein the side walls 3 include 5 sound producing openings 7 at the periphery of the box 1. The side walls 3 6 have openings 4. The openings 4 receive cords 5 terminating in finger 7 pieces 6. (Bell, col. 1, ll. 36-46 and col. 2, ll. 13-20). The toy is used by 8 twisting or winding the cords 5 in a circular fashion, then letting the toy 9 unwind and wind up again by pulling the finger pieces 6 away from each 10 other. (Bell, col. 1, ll. 46-55). Different rotational speeds of the toy emit 11 harmonic tones or overtones of a note at varied volumes. The net effect is a 12 close simulation of the cry on an owl. (Bell, col. 2, ll. 32-39). 13 Gallagher is a device for making multiple animal calls, including bird 14 calls. Gallagher’s device has a wooden casing 10 with three airways 17a, 15 17b, 17c. The airways extend from mouthpiece openings 19a to sound-16 emitting openings 19b. (Gallagher, col. 3, ll. 38-44 and fig. 1). Each of the 17 three airways 17a, 17b, 17c has a convergent shape. The three airways 17a, 18 17b, 17c have different cross-sectional areas to provide animal calls of 19 different pitches. When a user blows into the airways 17a, 17b, 17c the 20 blown air accelerates until it reaches a vibratory elastic band 20. The elastic 21 band 20 acoustically modulates the air to produce the desired animal call. 22 (Gallagher, col. 4, ll. 60-67; col. 5, l. – col. 6, l. 16; and fig. 1). 23 The Examiner finds that “Bell does not disclose the sound being gavia 24 immer.” (Ans. 3). The Examiner also finds that “Gallagher teaches a 25 multiple animal call that is capable of calling more than one species of birds 26 Appeal 2009-009821 Application 11/230,208 4 as well as animals, also [providing] several ranges of sound pitch for calling 1 a particular bird species as well as animals.” (Id.). The Examiner concludes 2 that it would have been obvious “to provide a game call that allows for 3 sound production of different species of birds as well as making the game 4 call more versatile and portable, in that a number of species may be called 5 on a single game call.” (Ans. 4). 6 The Examiner fails to provide reasoning with some rational 7 underpinning adequate to support the conclusion that the subject matter of 8 claims 11 and 25 would have been obvious. The Examiner concludes that it 9 would have been obvious “to provide a game call that allows for sound 10 production of different species of birds as well as making the game call more 11 versatile and portable, in that a number of species may be called on a single 12 game call.” (Ans. 4) As the Appellant points out (see App. Br. 9), 13 Gallagher’s animal call relies on the vibration of an elastic band to create 14 animal calls. It is not apparent that Gallagher’s structure is capable of 15 producing any of the calls of a common loon. Furthermore, it is not 16 apparent that Gallagher’s description would have provided one of ordinary 17 skill guidance as to how to modify Bell’s whirligig to produce any of the 18 calls of a common loon. At most, the Examiner’s reasoning establishes that 19 one of ordinary skill might have had reason to try to solve the problem of 20 designing a whirligig capable of producing bird calls other than the cry of an 21 owl. This reasoning does not establish the obviousness of the claimed 22 subject matter. 23 We do not sustain the rejection of claims 11, 13, 14, 16, 19, 21 and 22 24 under § 103(a) as being unpatentable over Bell and Gallagher because the 25 Examiner’s conclusion of obviousness lacks rational underpinning. 26 Appeal 2009-009821 Application 11/230,208 5 Turning to the rejections of claims 15 and 20 under § 103(a), 1 Kolintzas describes a toy similar to Bell’s. Unlike Bell’s toy, Kolintzas’ toy 2 includes a light bulb 56 that is energized during manipulation of the toy. 3 (Kolintzas, col. 2, ll. 21-26 and 48-53). The Examiner does not point out 4 how the teachings of Kolintzas might remedy the deficiency in the teachings 5 of Bell and Gallagher as pointed out in connection with the rejection of 6 claim 11. Since the Examiner’s conclusion of obviousness lacks rational 7 underpinning, we do not sustain the Examiner’s final decision rejecting 8 claims 15 and 20 under § 103(a) as being unpatentable over Bell, Gallagher 9 and Kolintzas. 10 As for the rejection of claim 17 under § 103(a), Jenkins’ Figure 1 11 depicts a similar toy as Bell. Jenkins toy includes reeds or whistles C that 12 emit musical notes upon manipulation. Jenkins’ Figures 2 and 3 depict 13 parallel, circular plates d having openings f which gradually shift from one 14 reed or whistle C to the next in succession as the plates D revolve. This 15 gradual shift in the positions of the openings f changes the tone, note, pitch, 16 or quality of a musical sound emitted by the toy. (Jenkins 1, paragraph 17 bridging the first and second columns). Jenkins also depicts in Figure 4 a 18 toy that can be designed as a top. The Examiner does not point out how the 19 teachings of Jenkins might remedy the deficiency in the teachings of Bell 20 and Gallagher as pointed out in connection with the rejection of claim 11. 21 Since the Examiner’s conclusion of obviousness lacks rational underpinning, 22 we do not sustain the Examiner’s final decision rejecting claim 17 under 23 § 103(a) as being unpatentable over Bell, Gallagher and Jenkins. 24 Appeal 2009-009821 Application 11/230,208 6 DECISION 1 We REVERSE the Examiner’s decision rejecting claims 11, 13-17 2 and 19-22. 3 4 REVERSED 5 6 7 8 Klh 9 10 11 DARDI & HERBERT, PLLC 12 MOORE LAKE PLAZA, SUITE 205 13 1250 EAST MOORE LAKE DRIVE 14 FRIDLEY, MN 55432 15